UBS AG v. James Boros / UBSCAPITALS LTD
Claim Number: FA1503001612377
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington, D.C., USA. Respondent is James Boros / UBSCAPITALS LTD (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubscapitals.com>, registered with Registrar of Domain Names REG.RU LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Ms. Kateryna Oliinyk as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2015; the Forum received payment on April 1, 2015. The Complaint was received in both Russian and English.
On April 1, 2015, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <ubscapitals.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 6, 2015, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of April 27, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ubscapitals.com. Also on April 6, 2015, the Russian language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 26, 2015.
On May 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ms. Kateryna Oliinyk as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
4(a)(i). Complainant, UBS AG, is one of the largest financial services firms in the world, present in all major financial centers worldwide, with offices in more than 50 countries. Since at least as early as 1962, Complainant has been using the UBS mark in commerce in connection with a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services. The fame of Complainant’s UBS marks in the banking industry has been recognized by respective forums.
Complainant owns a large number of trademark registrations in the United States (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989), the European Union, Russia, and before WIPO for its UBS mark and the mark. Complainant also owns an International Registration for the mark UBS CAPITAL and corporate name registrations for UBS Capital (Jersey) Ltd., UBS Capital 2 Plus FI, UBS Capital Asia Pacific Limited, UBS Capital BV, and UBS Capital Securities (Jersey) Limited. The mark is used in connection with a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services. The <ubscapitals.com> domain name is confusingly similar to the UBS mark because the domain name contains the entire mark and differs only by the addition of the generic term “capitals” along with the generic top-level domain (“gTLD”) “.com.”
4(a)(ii). Respondent has no right or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name is being used to create the illusion that Respondent is partnered with Complainant.
Complainant contends that the Respondent has no trade mark or other intellectual property rights to the domain name.
4(a)(iii). Respondent has engaged in bad faith registration and use. By using the disputed domain name to give Internet users the impression that Respondent is partnered with Complainant, Respondent has created a likelihood of confusion, and is likely receiving commercial profit in the process. Also, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent states that they are the separate business and are not related to Complainant.
Respondent does not contend Complainant’s rights in the UBS mark. Respondent claims that the disputed domain name is not confusingly similar to the mark because the domain name is one word consisting of eleven characters while Complainant’s mark is only a three-letter acronym.
Respondent claims it has rights or legitimate interests in the disputed domain name because they operate a legitimate business under the name “UBSCapitals” that support the legitimacy of the use of the disputed domain name.
Respondent claims to have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii), as Respondent operates a business under the name “UBSCapitals.” Respondent does not make specific remarks about its business, but merely asserts that “We are a separate company.” Respondent claims the screenshots provided by Complainant are out of date and that Respondent updated the website upon the receipt of the written notice. Respondent has provided screenshots of its website, which display the name “UBSCapitals.”
A. Preliminary Procedural Issue: Language of the Proceedings
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
The language of the Registration Agreement is Russian, thereby initially making the language of the proceedings in Russian. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification.
The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the attention of the Respondent. In particular, the Panel notes that the Complainant has submitted the Complaint both in the English and Russian language to the National Arbitration Forum to initiate the present proceeding. The Respondent has then been notified of the Complaint and its contents in the Russian and English languages.
Thus, while the Registration Agreement is in Russian, the National Arbitration Forum communicated a number of accommodations to the Respondent to allow it to respond in Russian, and the National Arbitration Forum appointed a Russian speaker to the Panel. The Panelist is fluent in Russian and in English. Thus, no translations are therefore needed in these proceedings.
However, the Panel took due notice that the Respondent, as shown by the address given for the domain name holder in the concerned registrar’s Whois database at the time of the submission of the Complaint, locates in Road Town, Tortola, the British Virgin Islands being one of the British Overseas Territories where English is the official language, and has sent the response in English. This might have been a sufficient basis for concluding that the English language of the Complaint posed no difficulty for the Respondent.
Thus, the Panel, after review of the applicable rules on language of the proceedings under the UDRP and after taking into account all the relevant elements, concludes that it is appropriate to conduct the remainder of the proceedings in the English language. The Panel has discretion to determine the correct language of the proceeding based upon the circumstances of the case. See Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006‑0432.
B. Findings of Fact
As established based on evidences provided in Annex 5 to the Complaint, Complainant is the holder of a series of the UBS trademarks protected worldwide under the national and international procedures. And namely, Complainant holds the following registered trademark rights in the trademarks of a UBS series:
- UBS (word mark), U.S. trademark registration no. 1573828, reg. date. December 26, 1989, appln. filing date April 21, 1989;
- UBS & dev., U.S. trademark registration no. 3623958, reg. date. May 19, 2009, appln. filing date December 13, 2007;
- UBS INVESTMENT BANK, U.S. trademark registration no.2918463, reg. date. January 18, 2005, appln. filing date May 9, 2003;
- UBS WEALTH MANAGEMENT, U.S. trademark registration no. 3018190, reg. date. January 18, 2005, appln. filing date May 9, 2003;
- UBS & dev., U.S. trademark registration no. 3018190, reg. date. November 22, 2005, appln. filing date January 28, 2002;
- UBS & dev., U.S. trademark registration no. 2851071, reg. date. June 8, 2004, appln. filing date September 30, 1998;
- UBS, International registration no. 803311, registration date May 7, 2003 covering multiple territories;
- UBS & dev., International registration no. 700385, registration date 23.07.1998 covering multiple territories;
- UBS, International registration no. 650692, registration date 24.09.1995 covering multiple territories;
- UBS CAPITAL, International registration no. 700406, registration date 13.08.1998 covering multiple territories;
- UBS & dev., International registration no. 693243. registration date 14.04.1998 covering multiple classes.
Under U.S. trademark registration no. 1,573,828, the first use is claimed as of 1962.
Therefore, based on the records of the case and pursuant to the provisions of the Lanham Act, the Panel finds that the Complainant has benefited from exclusive rights to its UBS mark since April 21, 1989 (the application filing date under US reg. no. 1573828, reg. date. December 26, 1989). Complainant’s UBS marks are inherently distinctive, strong, famous, and deserving of a broad scope of protection. The fame of the UBS mark has been recognized by the respective forums and this allegation supported by evidences produced in Annex 6 to the Complaint.
Complainant owns and uses the domain name <ubs.com> registered according to the records of the WHOIS database open for the public access on February 15, 1993 which resolves to the Complainant’s website.
According to the extensive and overwhelming information about the history of the Complainant’s business and the UBS brand produced by Complainant in Annex 4, since at least as early as 1962, Complainant has been using the UBS mark in commerce in connection with a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services. Headquartered in Zurich, Switzerland, UBS is present in all major financial centers worldwide and employs about 60,000 people around the world. It has offices in more than 50 countries, with about 35% of its employees working in the Americas, 36% in Switzerland, 17% in the rest of Europe, the Middle East and Africa and 12% in Asia Pacific. Under Swiss company law, UBS Group AG is the holding company of the UBS Group. The operational structure of the Group comprises the Corporate Center and five business divisions: Wealth Management, Wealth Management Americas, Retail & Corporate, Global Asset Management and the Investment Bank.
According to the WHOIS registration profile the disputed domain name was registered on July 23, 2013 and resolves to a website that promotes Respondent’s business, as a company providing financial and brokerage services. According to the WHOIS records, the registrant’s name is James Boros and UBSCAPITALS LTD is indicated as the registrant’s organization. According to Annexes 7, 8, 9 to the Complaint, Complainant was indicated among the partners of Respondent, and the Zurich address of the Respondent’s headquarters was published on the “Contact” page of the Respondent’s website.
Upon the receipt of the written notice of the Complaint, the references to Complainant and Zurich address were deleted from Respondent’s website.
There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant has registered the UBS mark with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989) and a series of other international and national registrations of the UBS trademark and its derivatives. Among other registrations, Complainant holds valid registration of the UBS CAPITAL mark which enjoys legal protection under International registration no. 700406 valid in different designated countries. The UBS mark is registered and used in connection with a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain name comprises an exact reproduction of the Complainant’s trademark UBS juxtaposing with the “capitals” as a generic word and adds the gTLD “.com”. The UBS mark is a coined word which has the high degree of recognition among consumers worldwide. The fame of Complainant’s UBS marks in the banking industry has been recognized in previous WIPO decisions. See, e.g., UBS AG v. has book publishers, Inc., D2001-0637 and D2001-0639 (WIPO June 29, 2001) (ubs-privatebanking.com “is confusingly similar to the Complaint’s marks. The panel comes to this view because of the fame of the mark ‘UBS’ in a banking context.”); UBS AG v. Updated Business Solutions Ltd., D2002-0958 (WIPO Dec. 6, 2002) (where the panel referred to “the fame of the Complainant and its UBS marks” and “confusion with the Complainant’s well-known UBS marks”); and UBS AG v. G.A.S. Ltd., D2006-1181 (WIPO Nov. 10, 2006). As such, Complainant’s UBS mark should be entitled to the wide protection offered to well-known.
Thus, UBS is a highly distinctive mark and it has been reproduced in its entirety in the Respondent’s domain name. The Panel finds that this is the most prominent part of the Respondent’s domain name which will attract consumers’ attention. The Panel finds that the addition of the “capitals” as a generic word commonly used in the financial sector and adds the gTLD “.net” does not serve to distinguish it from the Complainant’s UBS mark.
Therefore, Panel finds that the <ubscapitals.com> domain name is confusingly similar to the Complainant’s mark “UBS” because the domain name contains the entire mark and differs only the addition of the generic term “capitals” along with the gTLD “.com.” As a general rule, a gTLD, such as “.com,” can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Prior panels have also found that the addition of a generic term to a domain name that is otherwise identical to the mark at issue creates a confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Thus, the Panel finds that the term “capitals” is merely generic and fails to provide any distinguishing relief for Respondent.
Yet the more, the domain name <ubscapitals.com> totally includes the Complainant’s UBS CAPITAL registered mark that also contributes to the misleading nature of the conflicting domain name. The use of the lower case letter format in the domain name, elimination of the space between words and addition of the letter “s” at the end of the name are differences without legal significance from the standpoint of comparing the disputed domain name with the Complainant’s trademark (see Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) finding that <utahwedding.com> was confusingly similar to the complainant’s UTAHWEDDINGS.COM trademark in spite of the trivial omission of the letter “s”); see Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant needs only to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The Complainant has established that the disputed domain name is identical or confusingly similar to its mark, and the record is clear that the Complainant has not authorized the Respondent to use its mark. Prior panel decisions such as Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025, have viewed this as a sufficient showing by a complainant under the Policy to shift the burden to the respondent to come forward with evidence demonstrating that it has rights or legitimate interests in the disputed domain name.
Complainant further argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant argues that Respondent is using the domain name to divert Internet traffic and give Internet users the impression that Respondent has entered into a partnership with Complainant. Complainant notes that initially UBS mark and logo appeared on the resolving webpage, as Respondent was claiming to be partnered with Complainant. See Compl., at Attached Ex. 7. Although Respondent deleted the reference to Complainant upon the receipt of the written notice, the Panel takes due note that the use of a confusingly similar domain name in itself precludes conclusion on bona fide use of a domain name. Prior panels have found that use a confusingly similar domain name to divert Internet users seeking the complainant’s website to the respondent’s website—and for the respondent’s benefit—does not consist of a bona fide offering or a legitimate noncommercial use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
According to the contents of the website to which the domain name resolves, the website is used by Respondent for commercial purposes to promote their business which he operates under the business name UBSCAPITALS and as the online platform to attract customers. Therefore, such use of the domain name does not constitute a legitimate noncommercial use of a domain name under Policy ¶ 4(c)(iii). (See Adobe Systems Incorporated v. Domain OZ, D2000-0057, WIPO March 22, 2000) (finding that mere use of the disputed domain names to attract customers, for commercial gain, to Respondent’s website by creating consumer confusion with Complainant’s trademarks would not, if such use were demonstrated, establish rights or legitimate interests in the domain names on the part of Respondent.)
The express text of paragraph 4(c)(ii) of the Policy indicates that to establish rights a respondent should have been commonly known by the "domain name". Furthermore, to benefit from paragraph 4 (c)(ii), the person or entity in whose name the domain name was registered must have been commonly known by the domain name by third parties before the domain name was registered or, in some decisions, before the filing of the complaint. (before registering domain name: See Compañнa de Radiocomunicaciones Mуviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a "MOVICOM BELLSOUTH" D2000-0915, WIPO Oct. 5, 2000, before filing of the complaint: see Flügger A/S v. Pierre-Yves Gautschi, D2002-0337, WIPO May 24, 2002).
In general, the Panels recognize a preponderance of the evidence standard which means that a fact is provide when it is more likely than not that the fact is true. Once Complainant makes out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to rebut showing by providing evidence that it is has rights to or legitimate interests in the domain name.
In all cases, the Panel shall assure that the both parties be treated with equality in these administrative proceedings. This Panel considers that upon receipt of the Complaint by Respondent, he has been given a fair and reasonable opportunity to properly and diligently respond, exercise its rights, defend its case, submit all relevant information, documentation, as well as any allegations, as it may consider appropriate.
According to the WHOIS records, the Respondent’s organization is UBSCAPITALS, LTD. In its response Respondent does not assert any trademark rights, but relies on the use of the UBSCAPITALS as the business name to support their legitimate use of the domain name in question. The contents of the website support this allegation. Thus, the Respondent has picked this domain name because it is the natural extension of its name by just adding .com to its legal name.
Thus, the domain name consists of the legal name of Respondent, and this argument is used by Respondent as a defense in this case.
Still, Respondent has not produced any plausible evidence to support being “commonly known” by the disputed domain name, or to show appropriately the prior continuous use of the name and territorial market over a sufficiently long period of time, or widespread evidence of recognition among Internet users as Respondents typically do to support their rights and/or legitimate interests in disputed domain names under Policy ¶ 4(c)(ii). (See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
Therefore, as no concrete evidence whatsoever on these business activities has been provided by Respondent, this claim can thus not constitute a defense for the purpose of these proceedings.
In addition the Panel notes that Respondent did not give any explanation for why the acronym “UBS” was chosen by Respondent for its business name and domain name. The acronym “UBS” is not a vocabulary word and is by no standard a common or natural way of combining the letters. (See Reuters Ltd. v. Teletrust IPR Ltd, D2000-0471, WIPO Sept. 8, 2000 (finding that the Respondent has not demonstrated the legitimate interest in respect of the contested domain name as the Respondent has not made any showing why the syllable "Reuters" which inevitably will be associated and confused with Complainants well-known trademark should be used in connection with its proposed business).
Under these circumstances the Panel finds that the Respondent has not duly demonstrated a legitimate interest in respect of the contested domain name.
It is also important to note that the Policy was designed to prevent cybersquatting in domain names and combat abusive registrations and should not be used for resolving more complex trade mark disputes (See Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005).
The Panel does not, because the UDRP does not require it, engage in further analysis as to whether there is an actionable claim for trademark infringement. A court of law or a mutually agreed arbitration tribunal is the appropriate venue for such an analysis. The questions that this Panel must address are carefully circumscribed by the Policy. Policy, ¶ 5.
Complainant bears the burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name. While there is obviously the confusing similarity between Complainant’s UBS mark and Respondent’s company name and domain name, there appears to be a legitimate trademark dispute between the parties, and the Panel is reluctant to adjudicate such a dispute given the limitations inherent in this streamlined process. See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy ¶ 4.1(c) (Oct. 24, 1999), available at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm (noting that “the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark)”). “The Policy covers only cyber squatting and cyber piracy, that is, instances ‘where the domain name registrant’s business activities (to the extent that they exist at all) are merely a pretext designed to camouflage the registrant’s intent to exploit the trademark value of a domain name.’” Public Co. Accounting Oversight Bd. v. Nagel, FA 290974 (Nat. Arb. Forum Aug. 17, 2004) (quoting Palace Holding SA v. Priston Entmt. Ltd., D2003-0705 (WIPO Dec. 5, 2003)).
Under these circumstances the requirements of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
The trademark UBS has been registered and used for many years worldwide and must be considered to be a well-known mark. Respondent has not contested this fact, and in the view of the Panel it is unlikely that the Respondent did not know of the mark when registering the contested domain name.
Paragraph 4(b)(iv) of the Policy provides another example of circumstances which shall be evidence of registration and use in bad faith, namely:-
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating the likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
Complainant claims that by using the disputed domain name to give Internet users the impression that Respondent is partnered with Complainant, Respondent has created a likelihood of confusion, and is likely receiving commercial profit in the process. The Panel notes that Complainant’s UBS mark appeared on the resolving webpage, as Respondent was claiming to be partnered with Complainant. See Compl., at Attached Ex. 7. As it was discussed above although Respondent deleted the reference to Complainant upon the receipt of the written notice, the Panel holds an opinion that the use of a confusingly similar domain name in itself precludes conclusion on bona fide use of a domain name. Prior panels have found that use of a domain name to create a likelihood of confusion for commercial profit consist of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
For the reasons already given, the Panel finds the respondent did act intentionally in this way. Further, it is likely the respondent was fully aware of the Complainants’ trade marks when it registered the domain name, since both parties are in the same line of business and Respondent used the Complainants’ mark and logo on its web site.
Considering all the facts and evidence the Panel therefore finds that the requirements of the Policy, Paragraph 4(a)(iii) are also fulfilled in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubscapitals.com> domain name be TRANSFERRED from Respondent to Complainant.
Ms. Kateryna Oliinyk, Panelist
Dated: May 27, 2015
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